CHINA: New Patent Law Adopted
Author:Iris Issuing Date:2009-02-12 Source:Chinaelites
To improve the system of patent law of
Below are the main amendments of the Patent Law.
Chapter I General Provisions
Article 1: This Act is enacted for the purpose of protecting the legal right of the patentee, encouraging invention and creation, promoting the appliance of invention and creation, improving scientific and technological ability for innovation, promoting progress in science and technology and development in economic and society.
Article 2:
"Invention" means any new technical solution relating to products, methods or the improvement thereof.
"Utility Model" means any new technical solution relating to a product's shape, structure, or a combination thereof, which is fit for practical use.
"Design" means any new design of a product's shape, pattern or a combination thereof, as well as its combination with the color and the shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application.
Article 5:
No patent right shall be granted for any invention-creation that is contrary to the provisions of laws and administrative regulations to obtain or exploit genetic resources and depend on the genetic resources.
Article 9:
For any identical invention-creations, only one patent right shall be granted. However, if any identical applicant applies for both utility model and invention on the identical date and the obtained utility model right is not yet terminated, the applicant declares a waiver of the utility model right, the invention right shall be granted.
Article 15:
If the part owners of the right to apply for a patent or the patent right have agreement on the exercise of rights, such agreement shall prevail. If there is no agreement, the part owners can exploit a patent on their own or permit others to exploit the patent by the way of common permission. The operating cost for permitting others to exploit the patent should be distributed among the part owners.
Exercising the common right to apply for a patent or the patent right should get the approval of all the part owners.
Article 17:
The patentee has the right to affix a patent marking on the patented product or on the packing of that product.
Article 19:
Foreigners, foreign enterprises or other foreign organizations which have no habitual residence or place of business in China applying for a patent and attending to other patent matters in the country should appoint a lawfully formed patent agency to act as its or his agent.
Where any Chinese entity or individual applies for a patent or has other patent matters to attend to in the country, it or he may appoint a patent agency to act as its or his agent.
Article 20:
Where any Chinese entity or individual applies for a patent in the foreign countries about the invention or utility model completed in
Article 21:
The Patent Administration Department under the State Council should give out information completely, authentically, accurately and publish the patent gazette regularly.
Chapter II Requirements for Grant of Patent Right
Article 22:
Novelty means that, this invention or utility model does not belong to the current technology; nor has any other person filed previously with the Patent Administration Department Under the State Council an application which described the identical invention or utility model and was recorded in the published patent application documents or the published patent documents after the said date of filing.
Inventiveness means that, as compared with the current technology, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
The current technology referred to in this Act means the well-known technology in the country or abroad before the date of filing.
Article 23:
Any design for which patent right may be granted must not belong to the current technology; nor has any other person filed previously with the Patent Administration Department Under the State Council an application which described the identical invention or utility model and was recorded in the published patent application documents or the published patent documents after the said date of filing.
Any design for which patent right may be granted must have obvious difference with the current design or the combination of the features of current design.
The current technology referred to in this Act means the well-known technology in the country or abroad before the date of filing.
Article 25:
For any of the following, no patent right shall be granted:
(6) The design playing the leading role of marking the pictures, colors or the combination of them of the plain printing
Chapter III Application for Patent
Article 26:
For any invention-creation depending on genetic resources, the applicant should illustrate the direct source and primary source of the genetic resources in the patent application documents; Applicant shall give reasons if he or it can not illustrate the primary source.
Article 27:
Where an app1ication for a patent for design is filed, a request, drawings or photographs of the design and documents of brief description about the patent for design shall be submitted.
The drawings or photographs submitted by the applicant shall clearly show the product’s design which claims patent protection.
Article 31:
An application for a patent for design shall be limited to one design incorporated in one product. Two or more designs which are incorporated in products belonging to the similar design or same class and are sold or used in sets may be filed as one application.
Chapter V Duration, Cessation and Invalidation of Patent Right
Article 47:
If, pursuant to the provisions of the preceding paragraph, compensation for patent infringement, the fee for the exploitation of the patent or of the price for the assignment of the patent right is not repaid, which is obviously contrary to the principle of equity, shall repay the whole or part of the fee.
Chapter VI Compulsory License for Exploitation of Patent
Article 48:
In any of the following cases, the Patent Administration Department under the State Council may, upon the request of the entity or individual which is qualified to exploit the invention or utility model, grant a compulsory license to exploit the patent for invention or utility model:
(1) The patentee does not exploit or fully exploit his/its patent without property reason within 3 years from the date of grant and within 4 years from the date of filing:
(2) The activity of exercising his/its patent right by the patentee is legally confirmed to be the monopolized activity and in order to eliminate or reduce the harmful influence to competition caused by such activity.
Article 50:
Regarding the medicine for which the patent right has been granted and for the purpose of Public Health, the Patent Administration Department Under the State Council may grant a compulsory license to exploit the patent for invention or utility model.
Article 51: the original Article 50
Article 52:
If the invention-creation which the compulsory license relates to is semiconductor engineering, the exploitation of it is limited to the purpose of Public Health and the conditions specified in Item (2), Article 48 of this Act.
Article 53:
Besides the granted compulsory license specified in Item (2), Article 48 and Article 50 of this Act, the exploitation of the compulsory license shall mainly supply domestic market.
Article 54:
According to the regulations of Item (1), Article 48 and Article 51, the entity or the individual applying for the compulsory license shall furnish proof to prove that it/he requests the patentee to grant the exploitation of the patent on reasonable terms but has not been granted within the reasonable time limit.
Article 55: the original Article 52
Article 56: the original Article 53
Article 57:
The entity or individual that is granted a compulsory license for exploitation shall pay to the patentee a reasonable exploitation fee, or deal with the exploitation fee problem according to International Treaty Provisions which the Republic of China taking part in. If the exploitation fee is paid, the amount of the fee shall be fixed by both parties in consultations. Where the parties fail to reach an agreement, the Patent Administration Department under the State Council shall adjudicate.
Article 58: the original Article 55
Chapter VII Protection of Patent Right
Article 59:
The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the content of claims.
The extent of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawings or photographs, briefly illustrating the product incorporating the patented design used for explaining the drawings or photographs.
Article 60: the original Article 57 except the second paragraph
Article 61:
Where any infringement dispute relates to a patent for invention for a process for the manufacture of a new product, any entity or individual manufacturing the identical product shall furnish proof to show that the process used in the manufacture of its or his product is different from the patented process.
Where the infringement relates to a patent for utility model or the patent for design, the people's court or the administrative authority for patent affairs may ask the patentee or interested party to furnish a patent right evaluating report made by the patent administration department under the State Council after searching, analyzing and evaluating to be the evidence for the infringement.
Article 62:
In the infringement relates to a patent, the accused infringer shall not constitute the infringement on the right for patent if it/he has the proof to prove the exploited technology or design belongs to the current technology or the current design.
Article 63:
Where any person passes off the patent of another person as his own, he shall, in addition to bearing his civil liability according to law, be ordered by the administrative authority for patent affairs to amend his act, and the order shall be announced. His illegal earnings shall be confiscated and , in addition, he may be imposed a fine of not more than four times his illegal earnings and, if there is no illegal earnings, a fine of not more than RMB 200,000 yuan. Where the infringement constitutes a crime, he shall be prosecuted for his criminal liability.
Article 64:
When the authority for patent affairs is investigating the suspected cases of counterfeit patent after getting the proof, it shall question the related parties; check the scene of the suspected crime; consult and copy the related contract, invoice, account book, etc; check the related products.
Article 65:
The amount of compensation for the damage caused by the infringement of the patent right shall be assessed on the basis of the actual losses suffered by the patentee through the infringement. If it is difficult to determine the actual losses, the amount of compensation shall be assessed on the basis of the profits which the infringer has earned through the infringement. If it is difficult to determine the losses which the patentee has suffered or the profits which the infringer has earned, the amount may be assessed by reference to the appropriate multiple of the amount of the exploitation fee of that patent under contractual license.
Article 66:
Where any patentee or interested party has evidence to prove that another person is infringing or will soon infringe its or his patent right and that if such infringing act is not checked or prevented from occurring in time, it is likely to cause irreparable harm to it or him, it or he may, before any legal proceedings are instituted, request the people's court to adopt measures for ordering the suspension of relevant acts and the preservation of property.
The applicant shall furnish guarantee when applying; the application shall be rejected without guarantee.
The people's court shall make a decision within 48 hours from the time of receiving the application; if there is special condition requiring delay, another 48 hours shall be permitted for delay. The related activities shall be implemented immediately when the decision orders the suspension. Where the parties are not satisfied with the decision, the parties may request for reconsideration. The implementation of the decision shall not be suspended during the time of reconsideration.
The people's court shall terminate the measures if the applicant does not institute within 15 days from the time of ordering the suspension.
If there is a mistake in the application, the applicant shall pay the compensation for the respondent.
Article 67:
In order to stop the activity of patent infringement, the patentee or the any interested party may applies for preserving evidence before instituting in the people's court.
Where the people's court takes measures for preserving, it may order the applicant to furnish guarantee; the application shall be rejected without guarantee.
The people's court shall make a decision within 48 hours from the time of receiving the application; the preserving measures shall be implemented immediately when the decision is made.
The people's court shall terminate the measures if the applicant does not institute within 15 days from the time of taking measures for preserving.
Article 68: the original Article 62
Article 69:
None of the following shall be deemed an infringement of the patent right:
(5) Make, use or import the patented medicine or the patented medical apparatus and instruments to provide the messages for administrative examination and approval. and make, import the patented medicine or the patented medical apparatus and instruments with the special purpose for it.
Article 70: the last paragraph of the original Article 63
Article 71: the original Article 64
Article 72: the original Article 65
Article 73: the original Article 66
Article 74: the original Article 67
VIII Supplementary Provisions
Article 75: the original Article 68
Article 76: the original Article 69